USPTO Patents Application 10553775

UNITED STATES DEPARTMENT OF COMMERCE
I nind Stall-, Patent and Trademark Office

( MM] l- OKl'Ml \

APPLICATION NO. | FILING DATE I FIRST NAMED INVENTOR | ATTORNEY DOCKET NO. | CONFIRMATION NO.

10/553,775 11/06/2006 Jonathan Rogers EL/2-22880/A/PCT 7722

EXAMINER
FANG, SHANE
ART UNIT 1 PAPER NUMBER

NOTIFICATION DATE | DELIVERY MODE |
09/10/2009 ELECTRONIC

Please find below and/or attached an Office communication concerning this application or proceeding.

The time period for reply, if any, is set in the attached communication.

Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):

andrca.dececchis@ciba.com
deborah.pinori (fSciba.com
sonny.nkansa@basf.com

United States Patent and Trademark Office

324 7590 09/10/2009

JoAnn Villamizar

Ciba Corporation/Patent Department
540 White Plains Road
P.O. Box 2005
Tarrytown, NY 10591

PTOL-90A (Rev. 04/07)

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Application No.

10/553,775

Applicant(s)

ROGERS ET AL.

Examiner

SHANE FANG

Art Unit

1796

- The MAILING DATE of this communication appears on the cover sheet with the correspondence address —
Period for Reply

A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE 3 MONTH(S) OR THIRTY (30) DAYS,
WHICHEVER IS LONGER, FROM THE MAILING DATE OF THIS COMMUNICATION.

- Extensions of time may be available under the provisions of 37 CFR 1 .136(a). In no event, however, may a reply be timely filed
after SIX (6) MONTHS from the mailing date of this communication.

- If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.

- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any
earned patent term adjustment. See 37 CFR 1 .704(b).

Status

1 )KI Responsive to communication(s) filed on 18 June 2009 .
2a )□ This action is FINAL. 2b)^ This action is non-final.

3) D Since this application is in condition for allowance except for formal matters, prosecution as to the merits is

closed in accordance with the practice under Ex parte Quayle, 1935 CD. 11, 453 O.G. 213.

Disposition of Claims

4) ^ Claim(s) 1-12,14-17,19 is/are pending in the application.

4a) Of the above claim(s) 1-4 and 14-16 is/are withdrawn from consideration.

5) D Claim(s) is/are allowed.

6) |EI Claim(s) 5-12,17 and 19 is/are rejected.

7) 0 Claim(s) is/are objected to.

8) D Claim(s) are subject to restriction and/or election requirement.

Application Papers

9) Q The specification is objected to by the Examiner.

10) D The drawing(s) filed on is/are: a)D accepted or b)D objected to by the Examiner.

Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121(d).

1 1) D The oath or declaration is objected to by the Examiner. Note the attached Office Action or form PTO-152.

Priority under 35 U.S.C. § 119

12) ^ Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
a)E| All b)D Some * c)D None of:

1 .□ Certified copies of the priority documents have been received.

20 Certified copies of the priority documents have been received in Application No. .

3.^ Copies of the certified copies of the priority documents have been received in this National Stage
application from the International Bureau (PCT Rule 17.2(a)).
* See the attached detailed Office action for a list of the certified copies not received.

Attach ment(s)

1) ^| Notice of References Cited (PTO-892) 4) □ Interview Summary (PTO-41 3)

2) □ Notice of Draftsperson's Patent Drawing Review (PTO-948) Paper No(s)/Mail Date. .

3) Information Disclosure Statement(s) (PTO/SB/08) 5 ) □ Notice of Informal Patent Application
Paper No(s)/Mail Date 10/28/05 . 6) □ Other: .

PTOL-T26 d (Rev e 08-06r

Office Action Summary

Part of Paper No./Mail Date 20090902

Application/Control Number: 10/553,775 Page 2

Art Unit: 1796

DETAILED ACTION

The X references listed on ISP are not anticipatory due to the cancellation of
claim 13 and withdrawn of claim 1.

Election/Restrictions

The applicant has elected Group II (claims 5-6) with traverse responding to
previous action, but no argument has been submitted. Because applicant did not
distinctly and specifically point out the supposed errors in the restriction requirement,
the election has been treated as an election without traverse (MPEP § 818.03(a)).

The applicant has changed the dependence of claims 7-12 and 17 to claim 5 and
added new claim 19 depending on claim 5. The examiner agrees to rejoin claims 7-12,
17 and 19 with Group II (claims 5-6) for examination.

This restriction is made FINAL. See previous action for the reasons of applying
restriction.

Claim Rejections - 35 USC §112

1 . The following is a quotation of the second paragraph of 35 U.S.C. 1 12:

The specification shall conclude with one or more claims particularly pointing out and distinctly
claiming the subject matter which the applicant regards as his invention.

2. Claim 5-12, 17 and 19 rejected under 35 U.S.C. 112, second paragraph, as
being indefinite for failing to particularly point out and distinctly claim the subject matter
which applicant regards as the invention.

A broad range or limitation together with a narrow range or limitation that falls
within the broad range or limitation (in the same claim) is considered indefinite, since

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the resulting claim does not clearly set forth the metes and bounds of the patent
protection desired. See MPEP § 2173.05(c). Note the explanation given by the Board
of Patent Appeals and Interferences in Ex parte Wu, 10 USPQ2d 2031, 2033 (Bd. Pat.
App. & Inter. 1989), as to where broad language is followed by "such as" and then
narrow language. The Board stated that this can render a claim indefinite by raising a
question or doubt as to whether the feature introduced by such language is (a) merely
exemplary of the remainder of the claim, and therefore not required, or (b) a required
feature of the claims. Note also, for example, the decisions of Ex parte Steigewald, 1 31
USPQ 74 (Bd. App. 1961); Ex parte Hall, 83 USPQ 38 (Bd. App. 1948); and Ex parte
Hasche, 86 USPQ 481 (Bd. App. 1949).

In the present instance, claim 5 (recites the broad recitation "R 19 and R 20 form a
ring", and the claim also recites "R 19 and R 20 together form a group of formula
=CR 100 R 101 ", which is the narrower statement of the range/limitation due to R 19 and R 20
being at the 1, 2 positions of biphenyl methane (2 nd formula from left on the third row).
Claim 6 recites the broad recitation "R 19 and R 20 are...d-Ci8 alkyl", and the claim also
recites "R 19 and R 20 are especially C4-C12 alkyl ", which is the narrower statement of the
range/limitation. For examination purpose, the boarder limitations are considered based
on the principle of broadest interpretation of claims.

Claim Rejections - 35 USC § 102

3. The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that
form the basis for the rejections under this section made in this Office action:

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A person shall be entitled to a patent unless -

(b) the invention was patented or described in a printed publication in this or a foreign country or in public
use or on sale in this country, more than one year prior to the date of application for patent in the United

4. Claim 5-6 and 19 rejected under 35 U.S.C. 102(b) as being anticipated by
Ogawa et al. (JP 0831 1 193, machine translation is used as English equivalent).

As to claim 5-6 and 19, Ogawa et al. discloses copolycarbonate polymer
composed of units (A) and (B) in the following generic structure (Abs. claim 1 ):

wherein RrRs can be H and X can be CH 2 , meeting formula (I) of instant claim 1 and
formula (la) of instant claim 19; Ri-R 8 can be H and Y can be CH 2 , meeting the formula
on Pg. 6, 2 nd column, 2 nd row of instant claim 5 and formula on Pg. 8, 1 st column, 4 th row
of instant claim 6.

5. Claim 5-7, 10-12, and 19 rejected under 35 U.S.C. 102(b) as being anticipated by
Woo et al. (US 6512083).

Woo et al. discloses polymer having moieties of 9, 9' substituted fluorene and at
least one monomer groups such as benzene and benzotriazole (claim 1 and 8). One of
ordinary skill in the art would at once envisage selecting benzene and benzotriazole

States.

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(meets formula (I) of instant claims 5 and 19) and 9, 9' methyl fluorene (meets formula
(I) of instant claim 5-6). Woo et al. discloses the fluorene unit is at least 10 (claim 1).
One of ordinary skill in the art would at once envisage selecting a polymer with 10
fluorene units, 1 benzene unit, and 1 benzotriazole unit, resulting in a polymer with 91
mol% of fluorene units that meets instant claim 7.

Woo et al. fails to disclose an exemplary polymer to meet instant claim 5-7 and 9.
However, a genus may be so small that, when considered in light of the totality of the
circumstances, it would anticipate the claimed species or subgenus. For example, it
has been held that a prior art genus containing only 20 compounds and a limited
number of variations in the generic chemical formula inherently anticipated a claimed
species within the genus because "one skilled in [the] art would... envisage each
member " of the genus. In re Petering, 301 F.2d 676, 681, 133 USPQ 275, 280 (CCPA
1962).

As to claims 10-12, Woo et al. discloses an electroluminescent device comprising
substrates and light-emitting polymer such as poly(fluorene-benzotriazole-benezne)
(claim 1 and 8) between anode and cathode (21: 50-55). The anode is transmissive
ITO (20:25-27), and the cathode is inherently reflective metal layer (21 : 40-45).

Claim Rejections - 35 USC § 103

6. The following is a quotation of 35 U.S.C. 1 03(a) which forms the basis for all
obviousness rejections set forth in this Office action:

(a) A patent may not be obtained though the invention is not identically disclosed or described as set
forth in section 102 of this title, if the differences between the subject matter sought to be patented and
the prior art are such that the subject matter as a whole would have been obvious at the time the

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invention was made to a person having ordinary skill in the art to which said subject matter pertains.
Patentability shall not be negatived by the manner in which the invention was made.

7. Claim 5-7, 9-12, and 19 rejected under 35 U.S.C. 103(a) as being unpatentable
over Woo et al. (US 6512083).

Disclosure of Woo et al. is adequately set forth in ^6 and is incorporated herein
by reference.

Woo et al. discloses a generic polymer that embraces a species meeting instant
claims 5-7, 10-12 and 19. Although many species are disclosed in the reference and
therefore anticipation does not appear to be present, it has been held that the mere fact
that a reference suggests a multitude of possible combinations does not in and of itself
make any one of these combination less obvious (Merck & Co. v. Biocraft
Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir. 1989). Therefore, it would
have been obvious to one having ordinary skill in the art to obviously recognize to
prepare claimed poly(fluorene-benzotriazole-benezne) and optical devices thereof.

As to instant claim 9, Woo et al. discloses a polymer having a species with
100mol% 9,9'-methyl fluorene unit (2:30-65, 3:1-10). The disclosed mol% is close to
claimed range of T unit in the copolymer (up to 99.5 mol%, Pg. 11, line 2). A prima
facie case of obviousness exists where the claimed ranges and prior art ranges do not
overlap but are close enough that one skilled in the art would have expected them to
have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d
775, 227 USPQ 773 (Fed. Cir. 1985).

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8. Claim 5-6, 8 and 17 rejected under 35 U.S.C. 103(a) as being unpatentable over
Dillion et al. (WO 97/12882) listed on IDS and ISP.

As to claims 8 and 17, Dillion et al. discloses a copolymer having the following
structure similarly identical to claimed invention (claim 1):

n, m, and o are i- 1 000..

As indicated by the above structure, the only difference is the pendant OH
groups. The instant [0047] excludes the disclosed structure with pendant OH groups
but shows no unexpected results via eliminating the hydroxyl groups. In light of this, the
similarity between the chemical structures and expected properties is sufficiently close
that one of ordinary skill in the art would have been motivated to make the claimed

Similar to T

Hy^rewyph aryl-
ethaue (HP i}Brsnsh

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copolymer. In re Payne, 606 F.2d 303, 203 USPQ 245 (CCPA 1979); In re Dillon, 919
F.2d 688, 16 USPQ2d 1897 (Fed. Cir.1991). See MPEP § 2144.09.

9. Claim 5-7, 10-12, and 19 rejected under 35 U.S.C. 103(a) as being unpatentable
over Rogers et al. (US 20050175856, filing date 06/06/2002).

Rogers et al. discloses generic polymer that embraces a species meeting instant
claims 5-7 and 19 having the following structure (claim 1):

<>CO<^pCCK>CO

H 3 C CH 3

The 9, 9-substituted fluorene unit mol% falls within the claimed range (0-99.5%) recited
in instant claim 7. Although many species are disclosed in the reference and therefore
anticipation does not appear to be present, it has been held that the mere fact that a
reference suggests a multitude of possible combinations does not in and of itself make
any one of these combination less obvious (Merck & Co. v. Biocraft Laboratories, 874
F.2d 804, 10 USPQ2d 1843 (Fed. Cir. 1989). Therefore, it would have been obvious to
one having ordinary skill in the art to obviously recognize to prepare claimed
poly(fluorene-benzotriazole-benezne).

As to instant claims 10-12, Rogers et al. discloses the claimed light emitting
polymer between electrodes in an electroluminescent device (claim 1) comprising
substrates and anode and cathode, wherein the anode is inherently transmissive ITO
and the cathode is inherently reflective LiF/AI layer ([0346-0352]).

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Page 9

Claim Rejections - Double Patenting

10. The nonstatutory double patenting rejection is based on a judicially created
doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the
unjustified or improper timewise extension of the "right to exclude" granted by a patent
and to prevent possible harassment by multiple assignees. A nonstatutory
obviousness-type double patenting rejection is appropriate where the conflicting claims
are not identical, but at least one examined application claim is not patentably distinct
from the reference claim(s) because the examined application claim is either anticipated
by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140
F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29
USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir.
1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422
F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington, 418 F.2d 528, 163 USPQ
644 (CCPA 1969).

A timely filed terminal disclaimer in compliance with 37 CFR 1 .321 (c) or 1 .321 (d)
may be used to overcome an actual or provisional rejection based on a nonstatutory
double patenting ground provided the conflicting application or patent either is shown to
be commonly owned with this application, or claims an invention made as a result of
activities undertaken within the scope of a joint research agreement.

Effective January 1, 1994, a registered attorney or agent of record may sign a
terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with
37 CFR 3.73(b).

11. Claims 5-7, 10-11, and 19 are rejected on the ground of nonstatutory
obviousness-type double patenting as being unpatentable over claims 1 of copending
Application No. 10/517411. This is a non-provisional obviousness-type double
patenting rejection because the conflicting claims have in fact recently been allowed.

Claim 1 of 10/517411 meets instant claims 5-7, 10-11, and 19, as shown in the
above U 10.

Conclusion

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Art Unit: 1796

Any inquiry concerning this communication or earlier communications from the
examiner should be directed to SHANE FANG whose telephone number is (571)270-
7378. The examiner can normally be reached on Mon.-Thurs. 8 a.m. to 6:30 p.m. EST..
If attempts to reach the examiner by telephone are unsuccessful, the examiner's
supervisor, Randy Gulakowski can be reached on (571) 272-1302. The fax phone
number for the organization where this application or proceeding is assigned is 571-
273-8300.

Information regarding the status of an application may be obtained from the
Patent Application Information Retrieval (PAIR) system. Status information for
published applications may be obtained from either Private PAIR or Public PAIR.
Status information for unpublished applications is available through Private PAIR only.
For more information about the PAIR system, see http://pair-direct.uspto.gov. Should
you have questions on access to the Private PAIR system, contact the Electronic
Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a
USPTO Customer Service Representative or access to the automated information
system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.

Sf

/Randy Gulakowski/

Supervisory Patent Examiner, Art Unit 1796